Crye Precision LLC v. Concealed Carrier LLC

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

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CRYE PRECISION LLC,

Plaintiff, MEMORANDUM & ORDER

23-CV-4469(EK)(LKE)

-against-

CONCEALED CARRIER, LLC d/b/a

TACTICON ARMAMENT, a California

Limited Liability Company,

Defendants.

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ERIC KOMITEE, United States District Judge:

Plaintiff Crye Precision LLC brings this copyright and

trademark infringement action against Concealed Carrier, LLC

(“Tacticon”). Crye asserts that it holds copyrights in two

camouflage patterns, which it uses on various products and

markets with the trademark “MultiCam.” According to Crye,

Tacticon infringed on its copyrights and trademark by selling

counterfeit products, under the MultiCam mark, that bear a

camouflage pattern indistinguishable from Crye’s design.

Crye now moves for a preliminary injunction,

contending that post-trial damages cannot adequately compensate

for the harms Tacticon’s alleged infringement will cause while

this suit is pending. As set forth below, the motion is

granted.

Background1

Crye is a design and manufacturing firm that

specializes in producing military and police uniforms and

equipment. Thompson Decl. ¶ 4, ECF No. 7. At issue in this

suit is its “MultiCam” design, a camouflage pattern created by

Crye’s founder, Caleb Crye. To develop this pattern, Mr. Crye

used Adobe Illustrator to draw (with a stylus pen) each of the

pattern’s more than one-hundred shapes; he arranged their

“placement, specific groupings and layering”; and he selected

seven specific colors for those shapes. Crye Decl. ¶¶ 4–5, 16–

18, ECF No. 6.

Crye’s sister company, Lineweight LLC (“Lineweight”),

owns the copyright in and to the MultiCam pattern, which it

registered with the United States Copyright Office as

Registration No. VA 1-942-951 (the “’951 Registration”).

Thompson Decl. ¶ 7; Ex. A, Thompson Decl. Crye, in turn, has an

exclusive license to that copyright. Id.; Ex. B, Thompson Decl.

Through that license, Crye sublicenses the right to print the

MultiCam design onto fabrics and other materials, for the

1 The factual background is taken from the record available at this

stage, which includes the copyright and trademark registrations themselves,

as well as declarations and evidentiary exhibits submitted by both parties.

See Mullins v. City of New York, 626 F.3d 47, 52 (2d Cir. 2010) (At the

preliminary injunction stage, courts may consider evidence such as

“affidavits, depositions, and sworn testimony, even when they include

hearsay.”).

creation of apparel and accessories such as backpacks, belts,

and vests. Thompson Decl. ¶ 7.

As part of this sublicensing, Crye requires its

printers to follow certain specifications and quality-control

standards in printing MultiCam products. Id. ¶¶ 16-18. Crye

ensures, for example, that “nearly all” MultiCam products are

“printed on fabrics in a manner” that mutes or hides the product

user’s “near-infrared signature”; this feature, according to

Crye, conceals the user from night vision or other infrared-

based optical systems. Id. ¶ 17. Crye also requires that

printers apply the MultiCam design only to “high-quality,

premium fabrics” with high tensile strength, so that they are

resistant to tearing. Id. ¶ 18. Certain MultiCam products

contain other technical features, such as fire-resistance and

insecticide treatments. Id.

Crye is also the owner of two federally registered

trademarks (collectively, the “MultiCam Marks”) that are used in

connection with the advertising, marketing, and sale of MultiCam

products bearing the MultiCam design. Id. ¶ 8.

Mark Registration Filing Date Registration Date

Number

MultiCam 4,443,275 April 12, 2013 December 3, 2013

(the “’275

Registration”)

MultiCam 4,737,503 January 9, 2014 May 19, 2015

(the “’503

Registration”)

Crye has attempted to federally register eight variations of its

camouflage patterns as protected trade dress. Each time,

however, the U.S. Patent & Trademark Office (“USPTO”) has

refused registration on the grounds that the design is

“functional.” See, e.g., Def. Opp’n 9, ECF No. 20; Ex. 3, U.S.

Serial Nos. 86/161,357; 86/161,381; 86/161,402; 86/161,503,

86/161,550; 86/161,594; 86/161,631; 86/160,311.

Tacticon is a California corporation that markets,

distributes, and sells products through e-commerce websites

throughout the United States. See Antone Decl. ¶ 3, ECF No. 5.

Like Crye, Tacticon’s offerings include camouflage products such

as backpacks, belts, and vests. Id. ¶¶ 3–5.

On March 23, 2023, employees at Crye became aware that

Tacticon sells and markets products bearing a camouflage pattern

that, Crye asserts, is “virtually identical” to the MultiCam

design. Id. ¶ 3; see also Thompson Decl. ¶ 19. These products

are identified on Tacticon’s website with the color option

“Multicam.” Antone Decl. ¶ 4; Thompson Decl. ¶ 19. When it

suspected infringement, Crye purchased several of Tacticon’s

products for inspection and analysis by its internal design

team. Thompson Decl. ¶¶ 20-24.

On June 15, 2023, Crye sued Tacticon for copyright and

trademark infringement and moved for a temporary restraining

order and preliminary injunction, seeking to prohibit Tacticon

from infringing on its MultiCam design or MultiCam Marks. The

Court denied Crye’s application for a temporary restraining

order and set a briefing schedule on its motion for preliminary

injunction. The Court held argument on the motion and received

supplemental briefing thereafter. Neither party has requested

an evidentiary hearing. At the Court’s invitation, Crye

submitted physical exhibits — including a disassembled but

otherwise unaltered rifle bag bearing the allegedly infringing

camouflage pattern and a fabric cut of the MultiCam design — for

the Court’s inspection.

Legal Standard

A preliminary injunction is an “extraordinary” remedy.

Mazurek v. Armstrong, 520 U.S. 968, 972 (1997).2 To obtain such

an injunction, the moving party must demonstrate (1) “a

likelihood of success on the merits”; (2) “a likelihood of

irreparable injury in the absence of an injunction”; (3) “that

the balance of hardships tips in the plaintiff's favor”; and (4)

“that the public interest would not be disserved by the issuance

2 Unless otherwise noted, when quoting judicial decisions this order

accepts all alterations and omits citations and internal quotation marks.

of an injunction.” Benihana, Inc. v. Benihana of Tokyo, LLC,

784 F.3d 887, 895 (2d Cir. 2015).

Discussion

A. Crye Has Established a Substantial Likelihood of Success on

the Merits

1. Crye’s Copyright Infringement Claim

“To prevail on a claim of copyright infringement, the

plaintiff must demonstrate both (1) ownership of a valid

copyright and (2) infringement of the copyright by the

defendant.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101,

108–09 (2d Cir. 2001); see also Feist Publ’ns, Inc. v. Rural

Tel. Serv. Co., 499 U.S. 340, 361 (1991). As set forth below,

Crye has demonstrated that it is likely to succeed on the merits

of its copyright infringement claim.

a. Ownership of a Valid Copyright

Under the Copyright Act, a certificate of a

registration “made before or within five years after first

publication of the work shall constitute prima facie evidence of

the validity of the copyright and of the facts stated in the

certificate.” 17 U.S.C. § 410(c). Registrations made more than

five years after first publication, however, are not without

value; instead, the “evidentiary weight to be accorded the

certificate” falls “within the discretion of the court.” Id.

Where the defendant does not challenge the validity of the

certificates, or the plaintiff’s ownership of the copyrights

covered by the registrations, courts often extend the rebuttable

presumption to these later-obtained registrations. See, e.g.,

LEGO A/S v. Best-Lock Constr. Toys, Inc., 404 F. Supp. 3d 583,

596 (D. Conn. 2019) (collecting cases).

The MultiCam Copyrights were registered ten years

after their first publication, and thus Crye is not entitled to

the statutory presumption of validity. Because Tacticon does

not appear to challenge the validity of the registration

certificates themselves, or Crye’s ownership over the copyrights

they cover, the Court will accord them “some evidentiary weight”

in its assessment of Crye’s copyrights. See Troll Co. v. Uneeda

Doll Co., 483 F.3d 150, 154 n.5 (2d Cir. 2007).

i. Originality

“To qualify for copyright protection, a work must be

original — that is, it must be independently created by the

author and possess ‘at least some minimal degree of

creativity.’” Scholz Design, Inc. v. Sard Custom Homes, LLC,

691 F.3d 182, 186 (2d Cir. 2012) (quoting Feist, 499 U.S. at

345). This “requisite level of creativity is extremely low;

even a slight amount will suffice. The vast majority of works

make the grade quite easily, as they possess some creative

spark, no matter how crude, humble or obvious it might be.”

Feist, 499 U.S. at 345; see Mattel, Inc. v. Goldberger Doll Mfg.

Co., 365 F.3d 133, 135 (2d Cir. 2004). At the same time,

“copyright protection extends only to a particular expression of

an idea, and not to the idea itself.” Boisson v. Banian, Ltd,

273 F.3d 262, 268 (2d Cir. 2001).

Crye has demonstrated that its MultiCam designs were

the result of “artistic decisionmaking” and thus original. See

Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 764-65

(2d Cir. 1991). Caleb Crye attests to the process by which he

created MultiCam — hand-drawing more than a hundred unique

shapes and then selecting, grouping, and layering them in a

specific arrangement. Crye Decl. ¶¶ 4–5. Crye combined seven

distinct colors in different layers to create the final pattern.

Id. ¶¶ 16-17. The selection, contours, arrangement, and colors

of the various shapes all involved aesthetic choices. See id.

¶ 18. The resulting MultiCam design is thus sufficiently

original to merit copyright protection. See, e.g., Knitwaves,

Inc. v. Lollytogs Ltd., 71 F.3d 996, 1005 (2d Cir. 1995)

(copyright in leaf and squirrel design on children’s sweater);

MPD Accessories B.V. v. Urb. Outfitters, No. 12-CV-6501, 2014 WL

2440683, at *6 (S.D.N.Y. May 30, 2014) (copyright in scarf

design with “stripes of different widths and lengths, in

different directions, in different colors and with irregular

spacing”).

Tacticon does not deny that some aesthetic choices

went into developing the MultiCam pattern, but asserts that any

such copyright in the design is nevertheless inherently “thin.”

Def. Opp’n 6. Works that “contain a larger share of non-

copyrightable elements” generally enjoy “thinner” copyright

protection. Andy Warhol Found. for Visual Arts, Inc. v.

Goldsmith, 11 F.4th 26, 53 (2d Cir. 2021), aff’d sub nom. Andy

Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S.

508 (2023) (collecting cases). Thin copyright protection is

“appropriate where works reflect scant creativity,” such as when

the “work is composed of elements in the public domain” or “the

author has chosen to express an idea without much embellishment,

so that the expression is nearly indistinguishable from the idea

itself.” Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F.

Supp. 2d 147, 163 (E.D.N.Y. 2002), aff’d sub nom. Well-Made Toy

Mfg. Corp v. Goffa Int’l Corp., 354 F.3d 112 (2d Cir. 2003); see

Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338

F.3d 127, 135–36 & n.11 (2d Cir. 2003).3

Tacticon’s best case on this point is Beaudin v. Ben &

Jerry’s Homemade, Inc., 95 F.3d 1, 2 (2d Cir. 1996), in which

3 Although not cited in Tacticon’s opposition, defense counsel raised at

oral argument the doctrine of merger, which is “separate” from the concept of

thinness but “related” to it. Well-Made Toy Mfg. Corp., 210 F. Supp. 2d at

163. Under this doctrine, “if there is just one way to express an idea, the

idea and expression are said to merge, and the expression is not

protectible.” Yurman Design, 262 F.3d at 111.

the Second Circuit affirmed the holding that Ben & Jerry’s “cow

hats” did not infringe on the plaintiff’s “caps with Holstein

cow patterns.” The court held that the plaintiff’s “Holstein-

like black splotches on a white background” were entitled only

to thin protection because the “quantum of originality” in

Beaudin’s splotch pattern was only “slight.” Id.

But Beaudin does not control here. On the instant

record, Crye has shown that the MultiCam pattern is the product

of more than “scant creativity.” The arrangement of colors and

shapes in the MultiCam pattern permits substantially more

variation than the “black splotches on a white background” at

issue in Beaudin. As the Second Circuit pointed out in Beaudin,

the nature of cow spots that anyone else painting them would run

the risk of creating a design “indistinguishable” from the

plaintiff’s “original” version. Beaudin, 95 F.3d at 2.4

By contrast, one could envision hundreds, if not

thousands, of ways to express the idea of camouflage suitable

for multiple environments, with variations in the selection,

rendering, arrangement, and coordination of the individual

shapes and colors. Even further refining the “idea” to multi-

environment camouflage suitable for particular terrains like

4 Even then, the Second Circuit noted that Ben & Jerry’s cow pattern

differed from Beaudin’s. See id. (“The white background is a minimal feature

of Beaudin’s hat, but is an extensive feature of the Ben & Jerry’s versions

of the Holstein splotch pattern.”). Here, in contrast, the defendant’s

camouflage pattern is virtually identical to the plaintiff’s.

those in Afghanistan — thus limiting the color choices available

to those corresponding to that geography — still yields numerous

possible “expressions.” The Court need not guess at what some

of these different variations might look like: Crye provides a

sampling of camouflage patterns that use the same general color

choices (browns, tans, creams, and greens) and yet appear highly

dissimilar. Crye Decl. ¶ 19 (visually excerpting the

HyperStealth Thortex and Survival Corps SURPAT camouflage

patterns); Ex. D, Crye Decl. (visually excerpting numerous

multi-environment camouflage patterns that post-dated MultiCam’s

creation).

Crye has therefore demonstrated, at this stage, that

the MultiCam is sufficiently creative to be entitled to

copyright protection.

ii. Separability

More fundamentally, Tacticon argues that the MultiCam

pattern has a utilitarian function and therefore is ineligible

for copyright protection. Def. Opp’n 7. Because camouflage’s

function is to disguise the wearer’s location by blending into

the background, they say, MultiCam is an unprotectable “useful

article.” Id. at 7–9. Tacticon fails, however, to satisfy the

test set out in Star Athletica, L.L.C. v. Varsity Brands, 580

U.S. 405, 414-24 (2017) — under which the MultiCam pattern, at

this stage, passes muster.

The Copyright Act applies to “original works of

authorship fixed in any tangible medium of expression” including

“pictorial, graphic and sculptural works.” 17 U.S.C. § 102.

Copyright protection extends to the “design of a useful

article,” however, only if those features “can be identified

separately from, and are capable of existing independently of,

the utilitarian aspects of the article.” Id. §§ 101, 102(a). A

“useful article,” in turn, is one “having an intrinsic

utilitarian function that is not merely to portray the

appearance of the article or to convey information.” Id. § 101.

In Star Athletica, the Supreme Court clarified that “a

feature of the design of a useful article is eligible for

copyright if, when identified and imagined apart from the useful

article, it would qualify as a pictorial, graphic, or sculptural

work either on its own or when fixed in some other tangible

medium.” 580 U.S. at 417. Broken down, this “separability”

analysis has two requirements: “separate identification” and

“independent existence.” Id. at 414. Under the first

requirement, which “is not onerous,” one “need only be able to

look at the useful article and spot some two- or three-

dimensional element that appears to have pictorial, graphic, or

sculptural qualities.” Id. Under the second, the

“decisionmaker must determine that the separately identified

feature has the capacity to exist apart from the utilitarian

aspects of the article.” Id. “In other words, the feature must

be able to exist as its own pictorial, graphic, or sculptural

work as defined in § 101 once it is imagined apart from the

useful article.” Id.

Applying that test to the cheerleading uniforms at

issue, the Supreme Court concluded that the uniform decorations

were separable and therefore entitled to copyright protection.

Id. at 417-18. Specifically, the “colors, shapes, stripes, and

chevrons” on the uniform’s surface could be identified as

“features having pictorial, graphic, or sculptural qualities.”

Id. at 417. And once “separated from the uniform and applied in

another medium,” these features “would qualify as two-

dimensional works of art.” Id.

Crye’s MultiCam pattern likewise satisfies this test.

At the first step, the Court can “spot” the two-dimensional

element[s] — the distinctive shapes and colors that compose the

MultiCam design — that have “pictorial” or “graphic” qualities.

Id. At the second step, the MultiCam design is “capable of

existing” as a work once “imagined apart from the useful

article.” Id. at 414, 417. If imaginatively removed from

tactical gear and applied — “for example, on a painter’s

canvas,” — the pattern could still qualify as a two-dimensional

work of art. Id. at 417. Crye indicates that the Court need

not imagine such situations, as the MultiCam design has actually

been applied in this artistic, non-useful manner — appearing on

a NASCAR car, on professional sports team jerseys, and as a

piece of artwork featured in the Museum of Modern Art. ECF No.

7 ¶¶ 14-15; see Star Athletica, 580 U.S. at 417 (“Indeed,

respondents have applied the designs in this case to other media

of expression — different types of clothing — without

replicating the uniform.”).

Forgoing this separability analysis, Tacticon instead

focuses on the MultiCam design’s original function — concealing

the wearer of apparel in which it appeared — and its

effectiveness in performing that function. Def. Opp’n 7–9.

Star Athletica, however, forecloses this argument. Star

Athletica, 580 U.S. at 421. As the Supreme Court clarified, the

Copyright Act explicitly protects “applied art,” which is

defined to include “those arts or crafts that have a primarily

utilitarian function, or . . . the designs and decorations used

in these arts.” Id. (quoting Random House Dictionary 73

(1966)). “An artistic feature that would be eligible for

copyright protection on its own cannot lose that protection

simply because it was first created as a feature of the design

of a useful article, even if it makes that article more useful.”

Id. In this way, copyright law does not recognize “any

‘distinctions between purely aesthetic articles and useful works

of art.’” Id. (quoting Mazer v. Stein, 347 U.S. 201, 211

(1954)). Such is the case here: the fact that the MultiCam

design, as camouflage, has some functional qualities does not

render it ineligible for copyright protection.

For these reasons, Crye has shown a likelihood of

success in establishing a valid copyright in the MultiCam

design.

b. Infringement of the Copyright

To satisfy the second element of a copyright

infringement claim, a plaintiff “must demonstrate that: (1) the

defendant has actually copied the plaintiff’s work; and (2) the

copying is illegal because a substantial similarity exists

between the defendant’s work and the protectible elements of

plaintiff’s.” Hamil Am. Inc. v. GFI, 193 F.3d 92, 99 (2d Cir.

1999).

Actual copying may be established “either by direct

evidence of copying or by indirect evidence.” Laureyssens v.

Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992).5 Indirect

evidence “includes proof that the defendants had access to the

copyrighted work and similarities that are probative of copying

5 “[D]irect evidence of copying is seldom available,” Lipton v. Nature

Co., 71 F.3d 464, 471 (2d Cir. 1995), but could include an admission that the

copyrighted material served as the source of a given work. Recycled Paper

Prod., Inc. v. Pat Fashions Indus., Inc., 731 F. Supp. 624, 626 n.2 (S.D.N.Y.

1990). Here, Crye argues that the copying element is met because Tacticon’s

products are “virtually identical to MultiCam.” Crye Mem. 13. Though Crye

does not specify whether this is offered as direct or indirect proof, it fits

most neatly into the “similarity” prong of indirect proof.

between the works.” Hamil, 193 F.3d at 99. Proof of access, in

turn, “may be established directly or inferred from the fact

that a work was widely disseminated or that a party had a

reasonable possibility of viewing the prior work.” Boisson, 273

F.3d at 270. An “inverse relationship between access and

probative similarity” exists “such that the stronger the proof

of similarity, the less the proof of access is required.”

Jorgensen v. Epic/Sony Recs., 351 F.3d 46, 56 (2d Cir. 2003).

And where “the two works are so strikingly similar as to

preclude the possibility of independent creation, copying may be

proved without a showing of access.” Lipton v. Nature Co., 71

F.3d 464, 471 (2d Cir. 1995).

Two works are substantially similar when “an ordinary

observer, unless he set out to detect the disparities, would be

disposed to overlook them, and regard the aesthetic appeal as

the same.” Peter F. Gaito Architecture, LLC v. Simone Dev.

Corp., 602 F.3d 57, 66 (2d Cir. 2010). “In applying the so-

called ‘ordinary observer test,’” courts ask “whether an average

lay observer would recognize the alleged copy as having been

appropriated from the copyrighted work.” Id. “[I]n the end,

[the] inquiry necessarily focuses on whether the alleged

infringer has misappropriated “the original way in which the

author has selected, coordinated, and arranged’ the elements of

his or her work.” Id.

Crye has sufficiently demonstrated that it is likely

to prove substantial similarity. Here, access can be inferred

because, as Crye attests and Tacticon does not dispute, the

Multicam design is “widely disseminated,” and there exists a

“reasonably possibility” that Tacticon — which produces

competing products — had previously seen the pattern. See

Boisson, 273 F.3d at 270. A visual comparison of the MultiCam

pattern and Tacticon’s design, moreover, suggests that the two

works are substantially similar in the selection and

coordination of the unique shapes, and the general coloring of

those shapes.

As discussed above, the MultiCam design contains over

a hundred unique hand-drawn shapes, which Mr. Crye placed,

grouped, and layered in a distinctive arrangement. An

inspection of Tacticon’s design reveals shapes virtually

identical to those in the MultiCam design, in a near-identical

arrangement. Crye’s supporting papers assist in this visual

comparison, by including a “shape by shape and cluster by

cluster” comparison of the Tacticon and MultiCam designs.

Thompson Decl. ¶ 20. Specifically, Crye’s design team aligned

the two camouflage patterns and then broke them down into forty-

eight separate portions, enlarging and placing the resulting

cutouts next to one another. Ex. E, Thompson Decl. The results

of this analysis are striking, with the shapes and clusters

appearing in the Tacticon pattern nearly indistinguishable from

those found in the MultiCam design. Crye provides evidence of

copying in another way, by lining up or overlaying the two

patterns: when superimposed on top of MultiCam’s pattern, the

Tacticon design continues the shapes and arrangement of the

underlying pattern in a near-seamless manner. In other words,

both the contours of shapes and “the structural layout of these

[shapes] is essentially the same in both designs.” Tufenkian

Imp./Exp. Ventures, 338 F.3d at 136. Given these striking

similarities, an “ordinary observer” would likely recognize

Tacticon’s design “as having been appropriated from” the

MultiCam pattern. Knitwaves, 71 F.3d at 1001.

Tacticon points out, and Crye’s own director concedes,

that there are some “slight differences in the shades of color”

and “minimal modifications to some of the shapes.” Def. Opp’n 5

(quoting Thompson Decl. ¶ 26). These negligible variations

between the two products, however, “pale in comparison to the

overwhelming impression of similarity.” Knitwaves, 71 F.3d at

1005.

For these reasons, Crye has demonstrated a substantial

likelihood of success on its copyright infringement claim.

2. Crye’s Trademark Infringement Claims

Crye also asserts that Tacticon infringed its

“MultiCam” mark. To prevail on a trademark infringement claim,

a plaintiff must demonstrate that “(1) it has a valid mark that

is entitled to protection and that (2) the defendant’s actions

are likely to cause confusion with that mark.” Tiffany & Co. v.

Costco Wholesale Corp., 971 F.3d 74, 84 (2d Cir. 2020). Here,

too, Crye has demonstrated that it is likely to succeed on the

merits of its trademark claims.

a. Validity of Trademarks

Federal registration of a trademark is “prima facie

evidence of the validity of the registered mark,” as well as the

registrant’s ownership and exclusive right to use the mark. 15

U.S.C. §§ 1057(b); 15 U.S.C. § 1115(a); Matal v. Tam, 582 U.S.

218, 226–27 (2017). The presumption of validity means that “the

trademark is considered to be, at a minimum, descriptive with

secondary meaning.” See, e.g., CJ Prod. LLC v. Snuggly Plushez

LLC, 809 F. Supp. 2d 127, 151 (E.D.N.Y. 2011) (collecting

cases); see Arrow Fastener Co. v. Stanley Works, 59 F.3d 384,

393 n.6 (2d Cir. 1995) (“[I]t [is] clear that a decision by the

USPTO to register a mark without proof of secondary meaning

“affords a rebuttable presumption that the mark is more than

merely descriptive.”). When a plaintiff sues for infringement

of a trademark that is registered, the burden shifts to the

defendant to rebut the mark’s protectability. See Lane Capital

Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d

Cir. 1999).

In addition, a “registered mark becomes incontestable

if it has been in continuous use for five consecutive years

subsequent to its registration and is still in use.” Gruner +

Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1076 (2d Cir.

1993); 15 U.S.C. § 1065. Incontestable trademarks are

“conclusive evidence” of the mark’s validity. 15 U.S.C. §

1115(b); see KP Permanent Make–Up, Inc. v. Lasting Impression I,

Inc., 543 U.S. 111, 117 (2004).

In this case, it is undisputed that Crye owns two

federally registered trademarks in the word “MultiCam” — the

‘275 and ‘503 Registrations — which are used in connection with

the advertising, marketing, and sale of products bearing the

MultiCam pattern. Thompson Decl. ¶ 8. Because, moreover, it

has been in continuous use for five years after its

registration, the MultiCam Mark has become incontestable. Thus,

Crye is entitled to “enjoin its infringement relying on the

mark’s incontestability against a defense that the mark is

merely descriptive.” Gruner, 991 F.2d at 1077.

Tacticon contends that the MultiCam Marks are not

incontestable because Crye obtained their registrations by

fraud, and the term MultiCam is generic. As explained below,

for purposes of this motion, Tacticon is unlikely to carry its

burden to demonstrate that the MultiCam Marks are invalid.

i. Fraud in Obtaining the Trademark

Tacticon first asserts that the MultiCam Marks are not

incontestable (and in fact, are invalid) because Crye made

fraudulent statements to the USPTO to obtain the ‘503

Registration. Def. Opp’n 9–10. Such a defect, if proven, would

vitiate the incontestable nature of that mark, see 15 U.S.C.

§ 1115(b) — but only that mark. Tacticon does not challenge the

‘275 Registration on fraud grounds.

A party asserting registration fraud bears a “heavy

burden,” Quality Serv. Grp. v. LJMJR Corp., 831 F. Supp. 2d 705,

710 (S.D.N.Y. 2011) — one that it must meet by “clear and

convincing evidence.” See Orient Exp. Trading Co. v. Federated

Dept. Stores, Inc., 842 F.2d 650, 653 (2d Cir. 1988). “Fraud in

procuring a trademark registration occurs when an applicant

knowingly makes false, material representations of fact in

connection with his application.” MPC Franchise, LLC v.

Tarntino, 826 F.3d 653, 658 (2d Cir. 2016). A party must

demonstrate that the registrant made a “deliberate attempt to

mislead the PTO”; “mere error or inadvertence” is not enough.

Orient Exp. Trading Co., 842 F.2d at 653; see Quality Serv.

Grp., 831 F. Supp. 2d at 710. The “knowing misstatement,”

moreover, must be material — “one that would have affected the

PTO’s action on the applications.” Orient Exp. Trading Co., 842

F.2d at 653. The party “alleged to have committed fraud,” in

turn, “may rely on good faith as a defense.” Haggar Int’l Corp.

v. United Co. for Food Indus. Corp., 906 F. Supp. 2d 96, 107

(E.D.N.Y. 2012) (“Fraud will not lie if it can be proven that

the statement, though false, was made with a reasonable and

honest belief that it was true.”).

Tacticon asserts that Crye’s parent company,

Lineweight LLC, misled the USPTO by representing that the term

“Multicam” “appearing in the mark has no significance nor is it

a term of art in the relevant trade or industry or as applied to

the goods/services listed in the application, or any

geographical significance.” Def. Opp’m 10 (quoting Ex. 4 at

11), ECF No. 20-5. This statement was false, according to

Tacticon, because “MultiCam” is ”short for the descriptive

phrase ‘multi-environment camouflage’” and therefore clearly

“has significance to the [camouflage] goods described in the

application.” Def. Opp’n 10. But Tacticon has not proffered

meaningful evidence that the word was in fact functioning as a

“term of art” in the industry when Crye made the statement in

question.

And the statement appears to be technically accurate,

as Crye asserts: “MultiCam” is a made-up word that had no

meaning in the industry and was not used to describe the goods

identified in the ’503 Registration, including objects such as

helmets, sunglasses, belts, bags, clothing, and others. See

Crye Reply 6, ECF No. 22. Crye also raises a good-faith

defense. Id. It points out that the USPTO had previously

approved the ‘275 Registration, which was issued for “printed

camouflage patterns for use on fabrics and hard surfaces,”

without asking for the same information requested with respect

to the ’503 Registration. Id. Because the earlier application

did not include this information and was not rejected as

deceptive, Crye argues that it could reasonably have believed

that the information was not material or misleading in the later

application. Id. The history of the ‘275 mark’s prosecution,

Crye asserts, suggests that Crye’s counsel did not make

knowingly false statements to mislead the USPTO to approve the

’503 Registration.

In light of the “heavy burden” that rests on the party

asserting fraud, and the very limited record put forward by

Tacticon, which bears the burden on this issue, Tacticon’s

challenge to the MultiCam Marks’ incontestability on this ground

does not prevail.

ii. Genericide

Even if it was not a recognized “term of art” when

registered, Tacticon asserts that “MultiCam” has become a

generic term and thus lost its incontestable status. Def. Opp’n

13–17. “A trademark or service mark that becomes generic is no

longer entitled to protection.” Pilates, Inc. v. Current

Concepts, Inc., 120 F. Supp. 2d 286, 296 (S.D.N.Y. 2000) (citing

Park ‘n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189,

194 (1985)). Thus, even an incontestable mark can be rendered

invalid if it has become “the generic name for the goods or

services, or a portion thereof, for which it is registered.” 15

U.S.C. § 1064(3); see, e.g., Tiffany & Co. v. Costco Wholesale

Corp., 994 F. Supp. 2d 474, 481 (S.D.N.Y. 2014), aff’d 971 F.3d

74 (2d Cir. 2020).

“Marks that constitute a common descriptive name are

referred to as generic. A generic term is one that refers to

the genus of which the particular product is a species.” Park

‘n Fly, 469 U.S. at 194; see RiseandShine Corp. v. PepsiCo,

Inc., 41 F.4th 112, 120 (2d Cir. 2022) (“A generic mark is a

common name, such as automobile or aspirin, that identifies a

kind of product.”). As relevant here, a term is “the victim of

‘genericide’” where “a seller establishes trademark rights in a

term which a majority of the relevant public then appropriates

as the name of a product.” Horizon Mills Corp. v. QVC, Inc.,

161 F. Supp. 2d 208, 213–14 (S.D.N.Y. 2001) (collecting, as

notable examples of genericized terms, aspirin, cellophane,

escalator, and thermos). Whether a term has become generic is a

fact-intensive inquiry, and courts typically consider, among

other evidence, “(1) dictionary definitions; (2) generic use of

the term by competitors and other persons in the trade; (3)

plaintiff’s own generic use; (4) generic use in the media; and

(5) consumer surveys.” Pilates, Inc., 120 F. Supp. 2d at 297.

According to Tacticon, the term “multicam” has become

a generic term for “camouflage used in multiple environments”

and therefore cannot function as a trademark. Def. Opp’n 13.

In support of this argument, Tacticon marshals a small sample of

eleven third-party online retailers that use the term “multicam”

in selling camouflage gear. Def. Opp’n, Ex. 5, ECF No. 20-6.

Crye’s response is dispositive: it upends this argument by

pointing out that all but four of these retailers are actually

licensed distributors or sellers of MultiCam productors. Antone

Reply Decl., ¶ 4, ECF No. 23. Tacticon also points to Crye’s

own use of the word “MultiCam” in its briefing as a noun, rather

than an adjective. Def. Opp’n 16–17. Tacticon argues that this

use of the word, without modification, is evidence that Crye

uses the term generically itself. Id. Such a showing is

plainly insufficient, for purposes of this motion, to

demonstrate that a majority of the relevant public use

“MultiCam” as a common name to identify camouflage for multiple

environments.

Therefore, as with its assertion of registration

fraud, based on the limited record at this stage, Tacticon has

not met its burden to overcome the validity of the MultiCam

Marks.

b. Likelihood of Consumer Confusion

To satisfy the second element of a trademark

infringement claim, the plaintiff must demonstrate that “the

defendant’s use of a similar mark is likely to cause consumer

confusion.” Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360

F.3d 125, 129 (2d Cir. 2004). This “prong turns on whether

ordinary consumers are likely to be misled or confused as to the

source of the product in question because of the entrance in the

marketplace of [the junior user’s] mark.” Guthrie Healthcare

Sys. v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016).

To evaluate the likelihood of consumer confusion, the

Second Circuit uses the eight-factor test set out by Judge

Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492

(2d Cir. 1961). These factors examine: (1) the strength of the

plaintiff’s mark; (2) the similarity of the marks; (3) the

competitive proximity of the products in the marketplace; (4)

the likelihood that the senior user will “bridge the gap” by

moving into the junior user’s product market; (5) evidence of

actual confusion; (6) the junior user’s intent – good or bad

faith – in adopting the mark; (7) the respective quality of the

products; and (8) the sophistication of the consumers in the

relevant market. Id. at 495. “No single factor is dispositive;

rather, each is evaluated in the context of how it bears on the

ultimate question of likelihood of confusion as to the source of

the product.” Souza v. Exotic Island Enterprises, Inc., 68

F.4th 99, 110 (2d Cir. 2023).

i. Strength of the Mark

“The strength of a mark refers to its distinctiveness,

that is to say, the mark’s ability to identify goods sold under

it as coming from one particular source.” Streetwise Maps.,

Inc. v. VanDam, Inc., 159 F.3d 739, 743 (2d Cir. 1998). Courts

evaluate distinctiveness based on either or both of the

following: (1) “the degree to which it is inherently

distinctive,” often referred to as conceptual strength; and (2)

“the degree to which it has achieved public recognition in the

marketplace,” often referred to as acquired or commercial

strength. RiseandShine, 41 F.4th at 120.

First, conceptual strength “is assessed on a continuum

from least to most distinctive, with the aid of categories

usually called (1) generic, (2) descriptive, (3) suggestive, and

(4) arbitrary or fanciful, with marks in the last category

considered the strongest.” Car-Freshner Corp. v. Am. Covers,

Inc., 980 F.3d 314, 329 (2d Cir. 2020). As most relevant here,

a descriptive mark “is one that tells something about a product,

its qualities, ingredients or characteristics,” while a

suggestive mark “suggest[s] (rather than directly describe[s])

the product on which [it is] employed, or its attributes,

sometimes requiring imagination to grasp the linkage.” Gruner,

991 F.2d at 1076. Descriptive marks are “presumptively

unprotectable,” but can become protectable “if they have

acquired secondary meaning, i.e. an acquired public recognition

as a mark identifying the source.” RiseandShine, 41 F.4th at

121. Suggestive marks, by contrast, “are protectable without

need to show acquired secondary meaning.” Id.

Crye’s MultiCam Marks are suggestive. They do not

immediately describe the nature of Crye’s products — camouflage

suitable for multiple environments — but instead require the

consumer to make at least some “additional mental effort to

identify the associated product in particular.” Cross Com.

Media, Inc. v. Collective, Inc., 841 F.3d 155, 163 (2d Cir.

2016); see, e.g., DJ Direct, Inc. v. Margaliot, 512 F. Supp. 3d

396, 409-10 (E.D.N.Y. 2021) (“KaraoKing,” a “portmanteau of the

words ‘Karaoke’ and ‘King, [was] meant to suggest a superior

karaoke machine”); Jackpocket, Inc. v. Lottomatrix NY LLC, 645

F. Supp. 3d 188, 240 (S.D.N.Y 2022) (categorizing “JACKPOCKET,”

formed by “the juxtaposition of ‘jackpot’ and ‘pocket,’” as

suggestive of internet lottery products). Nor does the

“MultiCam” Mark “conjure up the image of the precise good with

which it is associated,” as does a descriptive mark. Playtex

Prods., Inc. v. Ga.–Pac. Corp., 390 F.3d 158, 164 (2d Cir. 2004)

(affirming finding that mark “Wet Ones,” used for moist

towelettes, was suggestive).

Second, a mark is commercially strong if it has

acquired “secondary meaning,” such that “in the minds of the

public, the primary significance of” the mark “is to identify

the source of the product rather than the product itself.”

Christian Louboutin, S.A., v. Yves Saint Laurent Am. Holding,

Inc., 696 F.3d 206, 216 (2d Cir. 2012). Here, the MultiCam

Marks are incontestable, and therefore have acquired secondary

meaning as a matter of law. See Times Mirror Magazines, Inc. v.

Field & Stream Licenses Co., 294 F.3d 383, 391 (2d Cir. 2002)

(“Because FSLC continually maintained its registration of the

mark, FSLC’s mark is incontestable and, as a matter of law, it

has acquired secondary meaning”); 3M Co. v. Performance Supply,

LLC, 458 F. Supp. 3d 181, 194 (S.D.N.Y. 2020) (similar).

The strength of the MultiCam Marks therefore weighs in

favor of Crye.

ii. Similarity of the Marks

“In assessing the similarity between two marks, a

court will look to whether the similarity is likely to cause

consumer confusion.” Morningside Grp. Ltd. v. Morningside Cap.

Grp., L.L.C., 182 F.3d 133, 139–40 (2d Cir. 1999). Because

Tacticon has reproduced the “MultiCam” Marks in their entirety,

this factor weighs in favor of Crye. See, e.g., Cadbury

Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996)

(“For the purpose of considering the question of the similarity

of the marks, the district court correctly determined that as a

matter of law these marks [“COTT” v. “COTT”] are identical”);

Juicy Couture, Inc. v. Bella Int’l Ltd., 930 F. Supp. 2d 489,

500 (S.D.N.Y. 2013) (“Defendants’ marks, JUICY GIRL,

JUICYLICIOUS and JG are similar, if not identical (i.e., Juicy

Girl), to the Juicy Marks in name alone.”).

iii. Competitive Proximity

“The ‘proximity-of-the-products’ inquiry concerns

whether and to what extent the two products compete with each

other.” Cadbury Beverages, 73 F.3d at 480 (2d Cir. 1996). “To

the extent goods (or trade names) serve the same purpose, fall

within the same general class, or are used together, the use of

similar designations is more likely to cause confusion.” Lang

v. Ret. Living Pub. Co., Inc., 949 F.2d 576, 582 (2d Cir. 1991).

“In examining this factor[,] a court should compare all aspects

of the products, including price, style, intended uses, target

clientele, typical distribution channels, and others.”

Brockmeyer v. Hearst Corp., 248 F. Supp. 2d 281, 296 (S.D.N.Y.

2003).

This factor weighs in favor of Crye. Even on this

limited record, cf. Def. Opp’n 19, it is apparent that Tacticon

sells the same or similar apparel and products — including

backpacks, rifle bags, belts, and vests — as those that bear the

MultiCam Marks. Tacticon markets and distributes such products

through some of the same channels of trade as Crye’s authorized

distributors, including on e-commerce platforms like the Amazon

marketplace. See Def. Opp’n, Ex. 5. And Tacticon and Crye’s

authorized distributors market and sell their products to a

similar target audience, which includes both the civilian public

and members of the military and law enforcement. Compl. ¶ 44;

Antone Reply Decl., ¶¶ 5-6. As to the former group of

consumers, in its exhibit listing examples of retailers that use

the term “MultiCam,” Tacticon identified several of Crye’s

licensees that sell to the civilian public, as does Tacticon.

Def. Opp’n, Ex. 5. These licensees also sell in the same

internet distribution channels as Tacticon. Id. And as for

military target consumers, Tacticon’s own Amazon storefront page

describes its gear as “combat ready,” suggesting, at the very

least, that it is not intended only for commercial use. See id.

This overlap in product offering, intended uses,

target consumers, and distribution channels indicates that the

two products share competitive proximity with each other.

iv. Likelihood that Crye Will Bridge the Gap

“‘Bridging the gap’ refers to the likelihood that the

senior user will enter the junior user's market in the future,

or that consumers will perceive the senior user as likely to do

so.” Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 387 (2d

Cir. 2005). This factor, too, straightforwardly favors Crye:

because Tacticon’s products and those of Crye’s licensees are in

competitive proximity, “there is really no gap to bridge, and

this factor is irrelevant to the Polaroid analysis in this

case.” Id.

v. Evidence of Actual Confusion

“For purposes of the Lanham Act, actual confusion

means consumer confusion that enables a seller to pass off his

goods as the goods of another.” Sports Auth. Inc. v. Prime

Hosp. Corp., 89 F.3d 955, 963 (2d Cir. 1996). Evidence of

consumer confusion may include “mistaken orders, complaints from

customers or website visitors, market surveys or other signs of

uncertainty reflecting actual consumer confusion.” Big Star

Ent., Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185, 213

(S.D.N.Y. 2000). At the same time, “[i]t is black letter law

that actual confusion need not be shown to prevail under the

Lanham Act, since actual confusion is very difficult to prove

and the Act requires only a likelihood of confusion as to

source.” Guthrie Healthcare Sys., 826 F.3d at 45 (emphasis

added).

This factor weighs slightly in favor of Crye, even

though it has presented no evidence actual consumer confusion.

Because the use of an identical mark is “inherently confusing,

consumer confusion is presumed.” See, e.g., C=Holdings B.V. v.

Asiarim Corp., 992 F. Supp. 2d 223, 241 (S.D.N.Y. 2013);

Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp. Inc., 486

F. Supp. 2d 286, 289 (S.D.N.Y. 2007). This confusion is, of

course, even more likely when the parties compete in the same

markets.

vi. Good or Bad Faith

“In analyzing whether a defendant has acted in bad

faith, the question is whether the defendant attempted ‘to

exploit the good will and reputation of a senior user by

adopting the mark with the intent to sow confusion between the

two companies’ products.’” Tiffany & Co., 971 F.3d at 88. This

factor “does not bear directly on whether consumers are likely

to be confused,” although it may “affect the court’s choice of

remedy” or “tip the balance where questions are close.” Virgin

Enters. Ltd. v. Nawab, 335 F.3d 141, 151 (2d Cir. 2003).

Based on the current record, the Court declines to

infer that Tacticon was acting in bad faith, and treats this

factor as neutral.

vii. Respective Quality of Products

“This factor generally considers whether the senior

user’s reputation could be tarnished by the inferior merchandise

of the junior user.” Cadbury Beverages, Inc, 73 F.3d at 483.

As with the existence of bad faith, this factor is not “of high

relevance” to the likelihood-of-confusion inquiry, “as it goes

more to the harm that confusion can cause the plaintiff’s mark

and reputation.” Virgin Enterprises, 335 F.3d at 152. Quality

may become relevant, however, “when there is an allegation that

a low quality product is taking unfair advantage of the public

good will earned by a well-established high quality product.”

Gruner, 991 F.2d at 1079.

As evidence of the respective quality of the products,

Crye submits a few negative customer reviews submitted on

Tacticon’s Amazon storefront, which describe the products as

flimsy and “cheaply made.” Antone Decl. ¶ 5. Such reviews,

however, do “little, if anything, to bespeak the quality of the

underlying product”: as one court observed, “it is a rare

product that does not attract at least a small handful of

negative product reviews.” Ill. Tool Works Inc. v. J-B Weld

Co., LLC, 419 F. Supp. 3d 382, 399 (D. Conn. 2019). Indeed, in

asserting that it offers high-quality products, Tacticon points

to broader indicators of customer satisfaction on the Amazon

storefront — namely, a 94% positive ranking in the last twelve

months, based on almost 2,500 reviews, and an overwhelming

balance of “4-5 star” reviews on individual products. Def.

Opp’n 20.

More persuasive is Crye’s argument that products

distributed under its MultiCam Mark are subject to certain

quality specifications. Thompson Decl. ¶¶ 16-18. Products

bearing the MultiCam Mark must include near-infrared concealment

features; depending on the product, they must also be tear-,

fire-, and/or insect-resistant. Id. Tacticon does not dispute

that its product offerings lack some or all of these features.

This difference in quality could reasonably diminish consumer

perceptions of MultiCam Mark-bearing products. This factor

therefore weighs in favor of Crye.

viii. Sophistication of the Consumers

“The final Polaroid factor is grounded on the belief

that unsophisticated consumers aggravate the likelihood of

confusion.” Juicy Couture, 930 F. Supp. 2d at 502. This

analysis focuses on the “general impression of the ordinary

purchaser, buying under the normally prevalent conditions of the

market and giving the attention such purchasers usually give in

buying that class of goods.” Sports Auth., 89 F.3d at 965.

Generally, “the more sophisticated and careful the average

consumer of a product is, the less likely it is that

similarities in . . . trademarks will result in confusion

concerning the source or sponsorship of the product.” Bristol-

Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046 (2d

Cir. 1992). The “nature of the product or its price” often

impact the care a consumer will take in making purchases. Rush

Indus., Inc. v. Garnier LLC, 496 F. Supp. 2d 220, 229 (E.D.N.Y.

2007), aff’d, 309 F. App'x 431 (2d Cir. 2009).

This factor slightly favors Tacticon, or is at best

neutral. On the one hand, as Tacticon points out, Crye markets

its goods, in large part, to a class of sophisticated and

careful consumers who are unlikely to be confused: members of

the military and law enforcement units whose lives might depend

on the purchased products. Def. Opp’n 21-22; see Med. Econ. Co.

v. Prescribing Reference, Inc., 294 F. Supp. 2d 456, 465

(S.D.N.Y. 2003) (finding medical professionals to be “highly

sophisticated and unlikely to be confused” in discerning monthly

periodicals dealing with prescription drugs).

At the same time, both parties’ products are marketed

to the civilian public, including through widely disseminated

online channels, and “[r]etail customers . . . are not expected

to exercise the same degree of care as professional buyers.”

Virgin Enterprises, 335 F.3d at 151. And where, as here, the

products look to be identical and the marks are identical, the

sophistication of buyers cannot necessarily be relied on to

prevent confusion. See Banff, Ltd. v. Federated Dep't Stores,

Inc., 841 F.2d 486, 492 (2d Cir. 1988).

Given the limited record available at this time, this

factor is at best neutral, or weighs slightly in favor of

Tacticon.

* * *

After considering each of the eight Polaroid factors —

the overwhelming balance of which weigh in favor of Crye — the

Court finds that Crye has established a likelihood of success

that Tacticon’s use of the MultiCam Marks are likely to cause

consumers confusion as to the source of its products.

B. Crye is Likely to Suffer Irreparable Harm Absent an

Injunction

“A showing of irreparable harm is the single most

important prerequisite for the issuance of a preliminary

injunction.” Faiveley Transp. Malmo AB v. Wabtec Corp., 559

F.3d 110, 118 (2d Cir. 2009). Irreparable harm is “a continuing

harm which cannot be adequately redressed by final relief on the

merits and for which money damages cannot provide adequate

compensation.” Kamerling v. Massanari, 295 F.3d 206, 214 (2d

Cir. 2002) (per curiam). Where, by contrast, “there is an

adequate remedy at law, such as an award of money damages,

injunctions are unavailable except in extraordinary

circumstances.” Moore v. Consol. Edison Co. of N.Y., 409 F.3d

506, 510 (2d Cir. 2005). “The standard for preliminary

injunctive relief requires a threat of irreparable harm, not

that irreparable harm already have occurred,” see Mullins v.

City of New York, 626 F.3d 47, 55 (2d Cir. 2010) — although such

threat must be “actual and imminent,” not “remote” or

speculative.” Faiveley Transp. Malmo AB, 559 F.3d at 118.

Crye has demonstrated that it is likely to suffer

irreparable harm absent injunctive relief enjoining Tacticon’s

use of its MultiCam Mark. Following the enactment of the

Trademark Modernization Act of 2020, a plaintiff seeking a

preliminary injunction is “entitled to a rebuttable presumption

of irreparable harm” once it establishes a likelihood of success

on the merits. 15 U.S.C. § 1116(a). In other words, if the

plaintiff demonstrates both the validity of its mark and a

likelihood of confusion, and the defendant fails to rebut the

presumption, the plaintiff satisfies its burden of showing

irreparable harm. Tacticon does not meaningfully attempt to

rebut this presumption; its argument that there is no harm

because there is no infringement fails, given the conclusions

above.

In the copyright context, unlike trademark, “courts

must not simply presume irreparable harm.” Salinger v. Colting,

607 F.3d 68, 82 (2d Cir. 2010). “Rather, plaintiffs must show

that, on the facts of their case, the failure to issue an

injunction would actually cause irreparable harm.” Id. Harm

may be irreparable where the infringement “would substantially

diminish the value” of the work, “the loss is difficult to

replace or measure,” or “plaintiffs should not be expected to

suffer the loss.” WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 285

(2d Cir. 2012).

Crye has demonstrated that it will suffer irreparable

harm absent injunctive relief in the form of confusion in the

marketplace, as well as the loss of goodwill and reputation. As

Crye asserts, and Tacticon does not meaningfully dispute, the

company has invested substantial time, money, and resources — to

the tune of “decades of effort and hundreds of thousands of

dollars annually” — to develop the MultiCam design and to build

goodwill among its customers. Thompson Decl. ¶¶ 29–30. Crye

maintains its reputation for its high-quality products, in part,

by implementing and enforcing quality-control standards and

fabric specifications for its licensees. Id. ¶ 30.

Tacticon, by contrast, markets and sells products with

a camouflage pattern virtually identical to the MultiCam design,

but on fabrics and materials that undisputedly lack the

specifications required by Crye. In other words, although

Tacticon’s products look like MultiCam-designed products, they

do not perform in the same ways — a distinction that may not be

readily apparent to consumers. For these reasons, Tacticon’s

products threaten to cause “confusion among customers and loss

of goodwill for plaintiffs.” CJ Prod., 809 F. Supp. 2d at 145;

Pearson Educ., Inc. v. Labos, No. 19-CV-487, 2019 WL 1949820, at

*6 (S.D.N.Y. Apr. 23, 2019) (finding, in trademark and copyright

case, irreparable harm to [plaintiff’s] brand, business

reputation, and goodwill, because customers seeking to purchase

authentic [textbooks] will often be misled into purchasing

inferior, counterfeit copies”). This likelihood of confusion is

especially true because the “similarity in the design of the”

two camouflage patterns is “coupled with” Tacticon’s use of the

“MultiCam” Mark in advertising its products. Id.

Tacticon asserts, in response, that these harms of

which Crye complains in support of its copyright infringement

claims are only cognizable in the trademark infringement

context. Def. Suppl. Br. 1–2, ECF No. 31. According to

Tacticon, market confusion and any resulting reputational harms

to Crye are, by nature, predicated on consumers associating the

MultiCam design with Crye (and thus presumably thinking less of

Crye because of Tacticon’s products). See id. In this way,

MultiCam functions as a “source-identifier” — a hallmark of

trademark protection. See EMI Catalogue P’ship v. Hill,

Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64 (2d Cir.

2000) (“[Trademark’s] function is simply to designate the goods

as the product of a particular trader and to protect his good

will against the sale of another's product as his.”). And

because USPTO has refused to grant Crye trademark or trade dress

rights in the MultiCam design, Tacticon asserts, Crye cannot

assert these trademark-specific harms in support of its

copyright claims.

These points regarding the distinct purposes of

copyright and trademark law are well-taken. Tacticon, however,

cites to no authority for the proposition it asks this Court to

endorse: a plaintiff asserting copyright infringement alone

cannot claim irreparable harm in the form of consumer confusion

or loss of goodwill and reputation. To the contrary, the Second

Circuit has explicitly observed that, “[i]n the context of

copyright infringement cases, the harm to the plaintiff’s

property interest has often been characterized as irreparable in

light of possible market confusion.” Salinger, 607 F.3d at 81.

Indeed, the record includes evidence of actual or

likely consumer confusion in both the trademark and copyright

infringement contexts. Tacticon itself demonstrated how its use

of the MultiCam Mark is likely to confuse consumers: in its

attempt to demonstrate that third-party sellers use “MultiCam”

as a non-infringing color option, Tacticon identified what Crye

asserts are authorized MultiCam distributors. In other words,

Tacticon itself could not distinguish between MultiCam’s

licensees and non-licensees, suggesting at the very least that

consumers are just as likely to be confused. And as to

confusion over the MultiCam design itself, Crye provides one

such possible example: a buyer of one of Tacticon’s products

noted that it “perfectly match[ed]” the genuine MultiCam product

sold by one of Crye’s licensees. See Antone Reply Decl. ¶ 3.

This likewise indicates consumer confusion with regards to the

MultiCam design itself, even absent an accompanying trademark.

In short, Crye has sufficiently demonstrated that it

is likely to suffer irreparable harm absent injunctive relief

enjoining Tacticon from infringing on its MultiCam copyright and

trademark rights.

C. The Balance of Hardships Tips in Plaintiff’s Favor

In deciding a motion for preliminary injunctive

relief, “a court must consider the balance of hardships between

the plaintiff and defendant and issue the injunction only if the

balance of hardships tips in the plaintiff’s favor.” Salinger,

607 F.3d at 80. This assessment requires the court to “balance

the competing claims of injury and must consider the effect on

each party of the granting or withholding of the requested

relief.” Yang v. Kosinski, 960 F.3d 119, 135 (2d Cir. 2020).

In a copyright infringement case, the “plaintiff’s

interest is, principally, a property interest in the copyrighted

material,” while the defendant “likewise has a property interest

in [its] work to the extent that work does not infringe the

plaintiff’s copyright.” Salinger, 607 F.3d at 81 (emphasis

added). For this reason, “an infringer . . . cannot complain

about the loss of ability to offer its infringing products.”

WPIX, Inc., 691 F.3d at 287. The same logic applies in the

trademark infringement context. See, e.g., Pearson Educ, 2019

WL 1949820, at *7.

Given the likelihood of irreparable harm discussed

above, the balance of hardships tips in Crye’s favor. The

inability to control its design, coupled with potential consumer

confusion and loss in reputation and goodwill, threaten to cause

Crye ongoing harm absent an injunction. See, e.g., WPIX, 691

F.3d at 287 (“[T]he absence of an injunction would result in the

continued infringement of their property interests in the

copyrighted material.”); 3M Co. v. CovCare, Inc., 537 F. Supp.

3d 385, 404 (E.D.N.Y. 2021) (finding “substantial hardship in

the form of loss of control over the quality of products bearing

the 3M Marks and loss of goodwill and control over its

reputation”). Tacticon’s only arguments as to its harms —

namely, asserted logistical difficulties attendant to complying

with an injunction on an expedited timeline, see Def. Opp’n 23–

24 — are unpersuasive. Rather, these are the potential short-

term costs that every infringing defendant faced with a

preliminary injunction must bear.

Perhaps tellingly, Tacticon does not claim any more

far-reaching harms — let alone “catastrophic effects” — that

injunctive relief would have on its business. Guthrie

Healthcare Sys, 826 F.3d at 50. As Tacticon itself indicates,

its product offerings come in a variety of different colors and

patterns — ones that Crye does not argue infringe on its

MultiCam Design or the MultiCam Marks — that it may continue to

sell. Def. Opp’n 2 (listing “Camo,” “Flat Dark Earth Tan,”

“Olive Drab Green,” “Ranger Green,” “Black,” “Black Camo,” and

“Coyote Brown”); see CJ Prod., 809 F. Supp. 2d at 146

(“Defendants’ business will not be severely impacted, as they

have an extensive array of non-infringing products that they may

continue selling.”). Similarly, there appears to be “[n]o

reason . . . why [Tacticon] cannot change its [word mark] to one

that is not confusingly similar to [Crye’s] without suffering

major harm to its business.” See Guthrie Healthcare Sys., 826

F.3d at 50. In fact, Tacticon represents that it has begun to

do exactly that, making some efforts to remove “Multicam” from

its product listings. Def. Opp’n 24.

The balance of hardships here therefore weighs in

favor of granting Crye injunctive relief.

D. The Public Interest Would Not Be Disserved by an Injunction

Finally, the Court must “ensure that the ‘public

interest would not be disserved’ by the issuance of a

preliminary injunction.” Salinger, 607 F.3d at 80.

In the copyright context, “the public has a compelling

interest in protecting copyright owners’ marketable rights to

their work.” WPIX, Inc., 691 F.3d at 287; see also CJ Prod.,

809 F. Supp. 2d at 146 (“[I]t is uncontested that there exists a

strong policy in favor of defending copyrights.”). And in the

trademark context, “[t]he Second Circuit has long held that

there is a ‘strong interest in preventing public confusion.’”

Juicy Couture, 930 F. Supp. 2d at 505 (quoting ProFitness Phys.

Therapy Ctr. v. Pro–Fit Ortho. and Sports Phys. Therapy P.C.,

314 F.3d 62, 68 (2d Cir. 2002). In other words, the public has

an interest in “being assured that the mark it associates with a

product is not attached to goods of unknown origin and quality.”

New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F.

Supp. 2d 305, 344 (S.D.N.Y. 2010).

An injunction preliminarily enjoining the infringement

of Crye’s copyrighted design and use of the MultiCam Marks in

marketing products that bear the infringing design advances

these policy considerations underpinning both copyright and

trademark law. This public interest too, then, weighs in favor

of granting an injunction.

E. Bond

Under Federal Rule of Civil Procedure 65(c), “[n]o

preliminary injunction shall issue except upon the giving of

security by the applicant, in such sum as the court deems

proper.” Fed. R. Civ. P. 65(c). “In fixing the amount of

security required, a court is not required to order security in

respect of claimed economic damages that are no more than

speculative. Moreover, the burden is on the party seeking

security to establish a rational basis for the amount of the

proposed bond.” Int'l Equity Invs., Inc. v. Opportunity Equity

Partners Ltd., 441 F.Supp.2d 552, 556 (S.D.N.Y. 2006).

Here, Tacticon has asked that a $5 million bond be

imposed. Def. Opp’n 25. Tacticon cites cases imposing a bond

in that amount, but provides no explanation as to why it would

face that level of economic diminution in light of the

injunction — indeed, Tacticon supplies no justification for that

amount at all. Given that the burden is on the party seeking a

bond, no bond will be imposed at this time. See generally DJ

Direct, Inc. v. Margaliot, 512 F. Supp. 3d 396 (E.D.N.Y. 2021)

(no bond ordered where defendant offered no support for claim

that it would lose $270,000 as a result of the injunction); New

York City Triathlon, LLC, 704 F. Supp. 2d at 345 (no bond

ordered where defendant had “not demonstrated it will likely

suffer any harm absent the posting of a bond, and the likelihood

of success on the merits is overwhelming”). Tacticon may

revisit this issue in a more fulsome submission if it chooses,

at a later date.

Conclusion

For the foregoing reasons, Crye’s motion for a

preliminary injunction is granted. It is hereby ordered that:

1. Defendant, its officers, directors, agents, servants,

representatives, employees, successors, and assigns,

and all those acting in concert or in participation

with it, are enjoined from:

a. Directly or indirectly infringing the valid and

duly issued MultiCam Marks;

b. Directly or indirectly infringing the valid,

registered copyright in and to the MultiCam

design;

c. Directly or indirectly manufacturing, importing,

distributing, advertising, offering for sale,

and/or selling counterfeits of genuine MultiCam

products; and

d. Enabling, facilitating, permitting, assisting,

soliciting, encouraging or inducing others to

directly or indirectly infringe the registration

to the MultiCam design, along with the MultiCam

Marks, to manufacture, import, distribute,

advertise, offer for sale, and/or sell infringing

products.

2. Defendant, its officers, directors, agents, servants,

representatives, employees, successors, and assigns,

and all those acting in concern or in participation

with it, must immediately locate all infringing

products that are within its possession, custody or

control, and immediately cease selling, distributing,

transferring, or disposing of those infringing

products, pending an inspection by Crye. Any such

products determined by Crye during the inspection to

be authentic and not counterfeit shall, upon Crye’s

notice of such determination, be exempted from this

Order.

SO ORDERED.

/s/ Eric Komitee__________

ERIC KOMITEE

United States District Judge

Dated: September 17, 2024

Brooklyn, New York